[comments-wgb] INTA Comments on WG-B

[Michael Heltzer <mheltzer@inta.org>]

Response of the International Trademark Association to the WG-B Report

* Introduction *

The International Trademark Association (INTA) takes this opportunity to
offer its response to the request for comments on the "Working Group B
(WG-B) Report," which is to be considered by the Domain Name Supporting
Organization (DNSO) Names Council and by the Board of Directors of the
Internet Corporation for Assigned Names and Numbers (ICANN).  The WG-B
report is on the protection of trademarks in new top-level domains (TLDs)

INTA is a 122-year-old not-for-profit organization dedicated to, among other
things, educating business, the media and the worldwide public on the proper
use and importance of trademarks.  We have more than 3,700 members in 120
countries around the world.


* Trademark Protection is Needed *

No one benefits from consumer confusion except those who seek to engender
it.  It is consumer confusion that will take place if sufficient mechanisms
to protect trademarks from infringement are not put in place prior to the
introduction of new TLDs.  The likely culprits causing the confusion will be
bad-faith actors, such as cybersquatters, who will seek to capitalize on the
hard work and investment made by trademark owners. We have seen this type of
predatory behavior take place in existing generic or "gTLDs," as well as
country code or "ccTLDs." Cybersquatters seek to register as many trademarks
as domain names as is possible and then use the domains to do one or more of
the following:

1.  extract payment from the rightful owner of the mark; 
2.  offer the domain name for sale to third parties on a Web site; 
3.  use such names for pornographic sites or otherwise capitalize on
customer confusion; and  
4.  engage in consumer fraud, including copyright infringement and
counterfeiting activities; 

What follows is an endless number of disputes, accusations, and problems.

ICANN, the Names Council, the DNSO, and the entire Internet community should
pay heed to the lessons of the past and take necessary steps to prevent
cybersquatting when new TLDs are introduced.  What INTA and others in the IP
community advocate is attempting to prevent cybersquatting problems *
before* they occur.  


* Support for the Sunrise Proposal *
	
INTA supports the implementation of  the Sunrise Proposal put forward by the
Intellectual Property Constituency (IPC).  The Sunrise is an effective, but
even-handed approach to confronting the cybersquatting of trademarks in the
new TLDs.  Effective, because it seeks to stop cybersquatters *before* they
can seize domain names corresponding to trademarks.  Even-handed, because
the Sunrise would *not* be applicable in "specific, use limited, chartered
top-level domains" (Sunrise Proposal, Section V).  For example, there may be
certain chartered, non-commercial TLDs to which the sunrise would not apply.



* Response to Sunrise Criticisms *

INTA has reviewed Attachments 2 through 8 of the WG-B Report and takes this
opportunity to respond to specific criticisms of the Sunrise Proposal.

- The exclusionary proposals have no basis in technology or law.

The Sunrise provision is not "exclusionary."  It was made clear to the IPC
by the Registrar Constituency that an exclusionary model or filtering system
would not work at present for a number of reasons, including the high cost
factor, as well as technological difficulties.  The IPC therefore renewed
its efforts to develop a system which would help to prevent cybersquatting
activity in new TLDs, but at the same time respect the needs of the
Registrars, as well as the rights of non-commercial users of the Internet.

The Sunrise recognizes that trademark owners have legitimate and established
rights to the use of a name in forms of media, including the Internet.  This
fact has been established time and again by courts around the world.  These
courts have noted that in cyberspace, just like other forms of media,
trademarks are entitled to protection against infringement, dilution, and
unfair competition.  

The Sunrise does not require registrars to filter, nor does it call for
exclusion.  It simply allows a trademark owner and a domain name registrar
to enter into a contractual agreement for the registration of domain names,
recognizing that the trademark owner has existing rights in the name and
that both are seeking to prevent the registration of a domain name which can
cause consumer confusion.  

- The Sunrise provision will not be effective in curbing trademark
violations. 
	
This is not correct. Although not all cases of trademark violations will be
curbed by the Sunrise, we believe it will have a recognizable and positive
impact upon efforts to stop illegal and inappropriate uses of trademarks in
cyberspace.

- Trademarks are already adequately protected by the Uniform Dispute
Resolution Policy ("UDRP") and the Anticybersquatting Consumer Protection
Act ("ACPA"). 

INTA was a supporter of both the UDRP and the ACPA.  It is a misnomer,
however, to call them forms of "protection."  The UDRP and the ACPA are
appropriate forms of dispute resolution for trademark owners who are seeking
relief from domain name registrants *after* said registrants have allegedly
acquired the domain name in bad-faith.  What the Sunrise is all about,
however, is dispute *prevention* - taking care of the problem before it can
occur.  Preventing bad-faith  activity before it starts saves parties on
both sides time and expense.

-  Artificial Constriction of the Name Space by the IPC is Hurting Small
Business.
 
On this point, INTA merely wishes to state that trademarks are not only
owned by multi-national conglomerates.  They are owned by businesses of all
sizes, as well as individuals, and not-for-profit organizations.  All of
these trademark owners, regardless of their size, the number of marks they
own, or the nation in which the marks are registered, will have an
opportunity to participate in the Sunrise provided that they meet
established criteria (e.g. the trademark registration must be at least one
year old).  

 - By extending the Sunrise first right of refusal to all trademarks, and to
20 variations of names, it appears as though ICANN will be shielding
trademark owners for a wide range of common forms of criticisms and civil
society organizing. 

INTA agrees that fair use/freedom of expression considerations should be
factored into the discussion concerning the Sunrise.  We do wish to point
out, however, as we did above, that the Sunrise would *not* be applicable in
certain "specific, use limited, chartered top-level domains" (Sunrise
Proposal, Section V).  This is an important step towards ensuring that there
will still be space for instances of fair use and freedom of expression.  We
look forward to discussing this issue further, should the ICANN Board feel
that such discussion is necessary.

	
*Conclusion*
 
INTA appreciates this opportunity to provide comments to the Names Council
and the ICANN Board on the "WG-B Report" and we look forward to working with
our ICANN colleagues towards achieving consensus on a final recommendation
which will minimize the use of new TLDs to infringe upon trademark rights.  

Mike Heltzer
INTA Government Relations Manager
  and Staff Liaison to the INTA Special Committee 
  on the Internet